NIIT Ltd.

Trademark Trial and Appeal Board

Jan 30, 2003

EX (T.T.A.B. Jan. 30, 2003)

Mailed: January 30, 2003
Paper No. 19
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NIIT Limited
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Serial Nos. 75/888,282; 75/888,284; 75/888,285;
75/888,383; and 75/888,387
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Mark B. Harrison of Venable, Baetjer, Howard and Civiletti
for NIIT Limited.
Cheryl L. Steplight, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On January 6, 2000 NIIT Limited filed the above
intent-to-use applications to register three composite NIIT
marks and the marks BRICK & PORTAL and CENTURY OF THE MIND
for goods that were identified as “computer software” in
class 9.1
1 These applications also include services in classes 41 and 42.
However, the issue on appeal relates solely to the goods in
class 9.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 75/888,282; 75/888,284; 75/888,285; 75/888,383; and
75/888,387
2
The Trademark Examining Attorney, in her first office
action in each of the applications, advised applicant that
the identification of goods was unacceptable because it was
indefinite and required applicant to specify the function
of its computer software. In its responses, applicant
stated that it intended to use the marks in connection with
a variety of goods and services, and thus, the
identification of goods should be accepted “as is.” The
Examining Attorney was not persuaded and issued a final
office action in each application requiring applicant to
amend the identification of goods and refusing to register
the mark in the absence of compliance with the requirement.
Again, the Examining Attorney pointed out that applicant
must indicate the function of its computer programs.
Applicant filed a notice of appeal and a request for
reconsideration in each application. By way of the request
for reconsideration, applicant amended the
identification of goods in the applications to read as
follows:
Computer software for use in conjunction with
conducting classes, seminars, and conferences
and workshops in the field of computer hardware
and software usage and information technology;
computer software for use in conjunction with
computer consulting services, computer software
consulting services, computer software writing
services, technical consultation for others in
the field of computer aided engineering and
Ser Nos. 75/888,282; 75/888,284; 75/888,285; 75/888,383; and
75/888,387
3
engineering drawings, the design of computer
software and computer hardware for others and
computer programming for others.
The Examining Attorney denied each request for
reconsideration. Both applicant and the Examining Attorney
filed briefs, but no oral hearing was requested. The five
cases have been consolidated and this single opinion is
being issued for the cases.
The sole issue on appeal is whether the identification
of goods, as amended, is acceptable. We note that the
Board, in an opinion issued September 24, 2002, considered
this same issue in eight other applications owned by
applicant. For the reasons set forth in that opinion, we
find that applicant’s amended identification of goods is
unacceptable. A copy of the Board’s opinion is attached.
Decision: The requirement to amend the identification
of goods and the refusal to register in the absence of an
acceptable amendment is affirmed in each application.